John Hancock Life Insurance Company (U.S.A.) v. RAKSHITA MERCANTILE PRIVATE LIMITED
Claim Number: FA1303001491155
Complainant is John Hancock Life Insurance Company (U.S.A.) (“Complainant”), represented by Joshua S. Jarvis of Foley Hoag LLP, Massachusetts, USA. Respondent is RAKSHITA MERCANTILE PRIVATE LIMITED (“Respondent”), India.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <johnhancockinvestments.com>, registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED.
The undersigned certifies he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Houston Putnam Lowry, Chartered Arbitrator, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on March 22, 2013; the National Arbitration Forum received payment on March 25, 2013.
On March 24, 2013, TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED confirmed by e-mail to the National Arbitration Forum that the <johnhancockinvestments.com> domain name is registered with TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED and that Respondent is the current registrant of the names. TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED has verified that Respondent is bound by the TIRUPATI DOMAINS AND HOSTING PRIVATE LIMITED 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 March 27, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 16, 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@johnhancockinvestments.com. Also on March 27, 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 April 23, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Houston Putnam Lowry, Chartered Arbitrator, 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
[i.] Complainant John Hancock Life Insurance Company (U.S.A.), a wholly owned subsidiary of Manulife Financial Corporation, is an insurance and financial services company that provides insurance, investments, and other financial services under the famous JOHN HANCOCK® trademark. Founded in 1862 (via a predecessor entity), John Hancock is one of the oldest and best-known businesses in the U.S. and around the world.
[ii.] The JOHN HANCOCK® mark is registered in over 45 countries, including the United States, Australia, and India, and JOHN HANCOCK and JOHN HANCOCK-formative marks are the subject of over 90 trademark registrations worldwide. In the U.S., Complainant is the owner of incontestable Registration No. 557,033 of the mark JOHN HANCOCK (stylized), which has been registered since April 1, 1952, and incontestable Registration No. 1,287,236 of the mark JOHN HANCOCK, which has been registered since July 24, 1984. In Australia, Complainant is the owner of Registration No. B391243 of the mark JOHN HANCOCK, which has been registered since January 12, 1988. In India, Complainant is the owner of Registration No. 714420 of the mark JOHN HANCOCK (STYLIZED), registered since August 19, 2005, and Registration No. 714421 of the mark JOHN HANCOCK, registered since March 30, 2007. The JOHN HANCOCK mark has been used in the U.S. since John Hancock’s inception in 1862. Note that no other entity owns a U.S. registration of the mark JOHN HANCOCK®. Complainant uses the trademark and trade name JOHN HANCOCK® in connection with numerous financial services, including investment for others, retirement planning, and insurance underwriting and administration
[iii.] Complainant and its parent company, Manulife Financial Corporation, are the registered holders of over 72 Internet domain names that include the mark JOHN HANCOCK® (or which use the abbreviation “JHANCOCK”), including the <johnhancock.com> domain name.
[iv.] As a result of our client’s extensive and continuous use, promotion and advertising for over 150 years, the JOHN HANCOCK® mark is famous and widely associated with John Hancock’s financial services, and has acquired significant and valuable goodwill. The JOHN HANCOCK® mark has been featured in America’s Greatest Brands, a publication distributed by the American Brands Council, and in 1999 The New York Times named JOHN HANCOCK® one of the “100 most powerful corporate, media and product brands of the 20th century.” John Hancock has been the lead sponsor of the Boston Marathon each year since 1985, and was an official sponsor of the Olympic Games for 15 years (most recently sponsoring the Summer Games in Beijing in 2008). Also in support of its various services, John Hancock advertises extensively on national television and in print media, as well as on building signage (for instance, at Fenway Park in Boston and Dodger Stadium in Los Angeles). John Hancock has made a significant investment in developing the JOHN HANCOCK® brand over the course of many years, and it is now one of the most recognizable trademarks in the United States. Due to its status as a famous mark, JOHN HANCOCK® is entitled to a wide scope of protection. The JOHN HANCOCK® mark has been advertised and promoted by Complainant for over 150 years. Complainant diligently monitors use of the JOHN HANCOCK® mark and actively enforces its rights to prevent infringement or other damage to this valuable asset.
FACTUAL AND LEGAL GROUNDS
This Complaint is based on the following factual and legal grounds: UDRP Rule 3(b)(ix).
[a.] The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights. (UDRP Rule 3(b)(ix)(1); Policy ¶4(a)(i).)
Respondent’s domain <johnhancockinvestments.com> is confusingly similar to Complainant John Hancock’s registered trademark JOHN HANCOCK®, despite the addition of the suffix “investments.” Nordstrum, Inc. and NIHC, Inc. v. Steven Grotte, No. FA0207000115347 (NAF August 26, 2002) (“Respondent’s <nordstruminc.com> and <nordstrumsinc.com> domain names are confusingly similar to Complainant’s NORDSTRUM mark. The only differences between Complainant’s NORDSTRUM mark and the Respondent’s domain names are the addition of ‘inc’ after the mark and pluralizing the mark.”); Venator Group Retail Inc. v. Syed Hussain dba MIC, No. FA0110000100706 (NAF December 7, 2001) (“The addition of “INC” to Complainant’s FOOT LOCKER mark does not distinguish the disputed domain name from Complainant’s mark.”); Vivendi S.A., et al. v. CPIC NET, No. D2000-0685 (WIPO September 12, 2000) (Because each of Respondent’s domain names incorporates the full VIVENDI mark, minor differences that exist, such the addition of the terms “inc,” “corp,” “tv,” “music,” or “movie,” are legally insignificant). Like “music” or “movie,” the addition of “investments” -- a generic and otherwise weak term that immediately describes Complainant’s services -- is legally insignificant.
Indeed, in the present case the word “investments” actually serves to increase the confusing similarity, as Complainant’s JOHN HANCOCK® mark is used in connection with investment services. See TPI Holdings, Inc. v. Carmen Armengol, No. D2009-0361 (WIPO May 19, 2009) (the addition of the term “transactions” to the mark AUTO TRADER to create <autotradertransactions.com> served to increase the confusing similarity because Complainant’s AUTO TRADER mark was used in connection with advertising for automobile sales transactions). See also Magnum Piering, Inc. v. The Mudjackers and Garwood S. Wilson, Sr., No. D2000-1525 (WIPO January 29, 2001) (“[W]hen a domain name wholly incorporates a complainant’s registered mark, that is sufficient to establish identity or confusing similarity for purposes of the Policy.”). In this case, the domain name <johnhancockinvestments.com> wholly incorporates Complainant’s registered mark JOHN HANCOCK®, and is therefore confusingly similar.
[b.] Respondent has no rights or legitimate interests in the domain name. (UDRP Rule 3(b)(ix)(2); UDRP Policy ¶4(a)(ii))
[i.] Complainant has exclusive rights to the use of JOHN HANCOCK® in an Internet domain related to investment and other financial services by virtue of the fact that Complainant owns and has registered the trademark and domain name JOHN HANCOCK® alone and in various combinations. See, e.g., Cable News Network LP, LLP v. Elie Khouri d/b/a Channel News Network, No. FA0208000117876 (NAF Dec. 16, 2002) (holding complainant’s rights to CNN mark gave it exclusive rights to 325 domains combining “cnn” with various country names); Sony Kaisha v. Inja Kil, No. D2000-1409 (WIPO Dec. 9, 2000) (holding addition of ordinary descriptive words to SONY trademark does not detract from overall impression of dominant, trademark part of the domain); Empresa Brasliera de Telecommunicaciones S.A. – Embratel v. Kevin McCarthy, No. D2000-0164, ¶6 (WIPO May 15, 2000) (holding Brazilian registration of EMBRATEL sufficient to entitle complainant to use of domain <embratel.com>).
[ii.] Respondent is neither an agent nor a licensee of Complainant, and has never been an agent or a licensee of Complainant, and therefore has no right to use the JOHN HANCOCK® mark in its domain name.
[iii.] Respondent registered <johnhancockinvestments.com> approximately 144 years after the mark JOHN HANCOCK® was first used in the United States, approximately 55 years after Complainant filed its first application to register the mark JOHN HANCOCK® with the United State Patent and Trademark Office, and approximately 54 years after the mark JOHN HANCOCK® was registered with the United States Patent and Trademark Office.
[iv.] Respondent’s registration of the subject domain name prevents valid use of the domain by the Complainant, and therefore wastefully restrains the legitimate and proper use of the domain name and unlawfully tarnishes the Complainant’s marks.
[v.] Because the Complainant has established that Respondent’s domain name is confusingly similar to Complainant’s JOHN HANCOCK® mark and that Respondent is not licensed or otherwise authorized to use the JOHN HANCOCK® mark, the burden shifts to Respondent to establish some right or legitimate interest. See, e.g., Auto-C, LLC v. MustNeed.com, No. D2004-0025 (WIPO March 30, 2004) (“The Policy… appears to envisage a respondent taking steps to demonstrate its right or interest, and it is generally accepted that, once a complainant has proved that the domain name is identical or confusingly similar to its mark and that it has not authorized the respondent to use the domain name, the evidential onus shifts to the respondent to demonstrate that it has some right or legitimate interest.”).
[vi.] Respondent cannot meet its burden to demonstrate any legitimate rights to the domain. Respondent cannot show that, before any notice of the dispute, it used the domain name in connection with a bona fide offering of goods or services. See Policy, ¶4(c)(i).
[vii.] On information and belief, Respondent is not commonly known by the domain <johnhancockinvestments.com>. See Policy ¶4(c)(ii).
[viii.] Similarly, Respondent cannot demonstrate legitimate rights in the domain because Respondent is not making legitimate, non-commercial use of the domain. See Policy ¶4(c)(iii). 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. This use cannot confer legitimate rights in the disputed domain name. See Black & Decker Corp. v. Clinical Evaluations, No. FA0205000112629 (NAF June 24, 2002) (Pay-per-click sites “[do] not fall within the meaning of legitimate noncommercial or fair use in Policy ¶4(c)(iii).”)
[ix.] Finally, use of the famous JOHN HANCOCK® mark in connection with a “pay-per-click” website that displays the name “johnhancockinvestments.com,” and that advertises and redirect users to services that compete with Complainant’s JOHN HANCOCK® investment services, constitutes clear trademark infringement. Use of the JOHN HANCOCK® mark in the domain name <johnhancockinvestments.com> is not in connection with a bona fide offering of goods or services because “[t]he offering of goods and services in association with an infringing trademark use does not constitute a ‘bona fide’ offering of goods and services within the meaning of Policy paragraph 4(c)(i).” Cable News Network LP, LLLP v. Ahmed Latif, Case No. 100709 (NAF Dec. 31, 2001). On the contrary, Respondent’s use appears intentionally designed to confuse consumers and redirect their interest toward competitors of Complainant, likely resulting in referral revenue for Respondent.
[c.] The domain name has been registered and is being used in bad faith. (UDRP Rule 3(b)(ix)(3); Policy ¶4(a)(iii).)
Respondent has registered and used the <johnhancockinvestments.com> domain in bad faith for the following reasons:
[i.] As discussed above, Complainant’s widely registered trademark JOHN HANCOCK®, as well as Complainant’s use-based rights in the JOHN HANCOCK® mark and trade name, entitle Complainant to the exclusive use of the term “JOHN HANCOCK” in domain names related to Complainant’s investment and other financial services.
[ii.] Respondent’s domain -- <johnhancockinvestments.com> -- is confusingly similar to the JOHN HANCOCK® mark in which Complainant has exclusive rights. See Policy, ¶4(a)(i). As noted above, Respondent’s addition of the ordinary and descriptive term “investments” to Complainant’s registered trademark does not differentiate the subject domain name from Complainant’s trademark.
[iii.] There can be no question that there is a high likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of Respondent’s website with Complainant’s JOHN HANCOCK® mark and services. Considering the fame of Complainant’s JOHN HANCOCK® mark, and its widespread use and registration, it is certain that Respondent was aware of Complainant and the nature of Complainant’s business when Respondent registered the <johnhancockinvestments.com> domain in October of 2006. Complainant had extensive registration and use of the JOHN HANCOCK® mark well before Respondent registered the domain name.
[iv.] Even if Respondent did not have actual knowledge of Complainant’s trademark and trade name, and the association between the term “JOHN HANCOCK” and Complainant (which is highly dubious), Respondent had constructive knowledge thereof. Under 15 U.S.C. § 1072, registration of Complainant’s JOHN HANCOCK® mark constitutes constructive notice of that mark. See Ideal Prods., LLC v. Manila Indus., Inc., FA 819490 (NAF Nov. 26, 2006) (Registration of the domain name “well after the effective date (the application filing date) of the trademark SANI-TRED” helped to establish bad faith registration). See also Marconi Data Systems, Inc. v. IRG Coins and Ink Source, Inc., No. D2000-0090 (WIPO April 11, 2000) (“The Panel further finds that registration of [Complainant’s] mark puts Respondents on constructive notice of the existence of the mark.”); The Sportsman’s Guide, Inc. v. Modern Limited, Cayman Islands, No. D2003-0305, ¶6(C)(1) (WIPO June 18, 2003) (“Panel accepts that [constructive knowledge of registered trademarks] may be generally valid, especially in the situation when the Complainant and the Registrant of the disputed domain name are located in the US. The constructive knowledge concept refers to the fact that a registration at the federal level of a trademark provides constructive knowledge to any third parties in the US.”). Even if Respondent is indeed located in India, Complainant’s relevant JOHN HANCOCK® registrations in that jurisdiction would similarly provide constructive notice. Respondent therefore had legal, if not actual, notice of the Complainant’s mark prior to registering the domain name.
[v.] Respondent’s constructive knowledge of Complainant’s mark is further established by the fact that Respondent, in registering the infringing domain with registrar Tirupati Domains and Hosting Private Limited, agreed to the following provision:
Registrant shall further ensure that the Registrant does not infringe any intellectual property rights or other rights of any person or entity
Because Complainant’s trademarks are available online at www.uspto.gov in the U.S., http://pericles.ipaustralia.gov.au/atmoss/falcon.application_start in Australia, and publicly available in another trademark registry search engines worldwide, and because a simple trademark search would have revealed those marks, Respondent’s bad faith registration may be inferred from Respondent’s representation in the registration agreement. See Young Genius Software AB .v. MWD, James Vargas, No. D2000-0591, (WIPO Aug. 7, 2000) (holding representation of lack of infringement in registration agreement imposes concomitant duty to verify); PwC Business Trust V. Wei-Ling Liao, No. D2000-1668 (WIPO Feb. 18, 2001) (same); Familymeds Inc . v. Mohammad Tariq, No. D2003-0056 (WIPO March 17, 2003) (“Furthermore, the fact that the Respondent was obliged by his registration agreement to give an undertaking to his registrar regarding non-infringement of third party rights satisfies the Panel that the Respondent was doubly ‘on notice’ to conduct reasonable investigations for the existence of such rights.”). A simple web search, or PTO search, would have revealed the breadth of Complainant’s rights in the JOHN HANCOCK® mark. See, e.g., Familymeds Inc . v. Mohammad Tariq, No. D2003-0056 (WIPO March 17, 2003) (“As the Complainant points out, even if the Respondent was unaware of the existence of the Complainant a simple web search would either have located the ‘familymeds.com’ website or the Complainant’s trademarks at the USPTO.”). Even assuming that Respondent did not have actual knowledge of Complainant’s mark, Respondent’s constructive knowledge is sufficient evidence of bad faith registration.
[vi.] In addition, the arbitrary quality of Complainant’s JOHN HANCOCK® mark strongly suggest that Respondent did not independently arrive at the conclusion that <johnhancockinvestments.com> would constitute a profitable “pay-per-click” source of referral revenue, as the domain is not a logical choice of name apart from its obvious association with Complainant’s long-established JOHN HANCOCK® financial services.
[vii.] In light of the foregoing, Respondent registered the <johnhancockinvestments.com> domain name with actual and constructive knowledge that it was confusingly similar to Complainant’s registered JOHN HANCOCK® trademark. Therefore, the domain name was registered and is being used in bad faith. See, e.g., Yahoo! Inc. v. CPIC NET and Syed Hussain, No. D2001-0195 (WIPO May 8, 2001) (finding bad faith registration and use in light of widespread use of YAHOO marks on the Internet and because trademark search on date of registration would have revealed trademarks); Trip.com v. Deamone, No. D2001-1066 (WIPO Nov. 4, 2001) (“Actual or constructive knowledge of the Complainant’s rights in the Trademarks is a factor supporting bad faith.”).
[viii.] Respondent has registered and used the domain name in bad faith because it has hindered Complainant’s customers from contacting Complainant. See SGS Société Générale de Surveillance S.A. v. Inspectorate, No. D2000-0025 (WIPO March 17, 2000) (holding bad faith includes “diverting – even nonsensically – eventual customers to a commercial entity totally different from the one intended, and even by using a mere tombstone”).
[ix.] Respondent’s illicit use of the domain name creates the erroneous impression of endorsement by, or affiliation with, Complainant. Respondent acquired the domain name <johnhancockinvestments.com> either with willful disregard for Complainant’s rights, or with a deliberate plan to divert customers of Complainant who expect Complainant to own the domain names affiliated with its JOHN HANCOCK® mark and services. Such customers are likely to be confused as to whether the website located at www.johnhancockinvestments.com is related to or affiliated with Complainant. See Original Mattress Co., Inc. v. Dilworth Mattress and Ivenue.com, Inc., No. D2001-0176 (WIPO April 3, 2001) (finding that the domain names <originalmatress.com> and <originalmattressco.com> are likely to cause confusion and misdirect web traffic to respondents’ websites because they mislead as to source, sponsorship by, affiliation with, or endorsement by complainants). Confusion is especially likely in this case, as <johnhancockinvestments.com> wholly incorporates Complainant’s JOHN HANCOCK® mark with a term descriptive of the JOHN HANCOCK® investment services, and it is exceedingly probable that Internet users will expect the domain to resolve to Complainant’s Internet website. Thus, any dissatisfaction with Respondent’s website, or the websites to which it refers users that are not owned by Complainant, will reflect upon and irreparably damage Complainant’s valuable and hard-earned reputation and goodwill associated with its JOHN HANCOCK® mark.
[x.] While operation of a “pay-per-click” website or domain parking page alone is not per se bad faith use of a domain name, such a website that generates links clearly associated with a complainant’s trademark, so as “to deceive the public into believing that the site is associated with Complainant in some manner,” is exactly the type of behavior the UDRP is designed to combat. See Black & Decker Corp. v. Clinical Evaluations, No. FA0205000112629 (NAF June 24, 2002) (Finding bad faith registration and use where pay-per-click website generated links to the types of services associated with Complainant’s famous mark). Even where the links are not chosen by Respondent, and are instead generated by a domain “parking company,” Respondent should have known that such infringing content would be generated. Express Scripts, Inc. v. Windgather Investments Ltd. / Mr. Cartwright, No. D2007-0267 (WIPO April 26, 2007). Here, nearly all of the links chosen or generated for the www.johnhancockinvestments.com website are for services related to (and most competing with) Complainant’s famous JOHN HANCOCK® financial services, and it is likely that such links were chosen or generated expressly for their potential for generating referral revenue (which, even if not directed to only the domain name registrant, is often divided between domain parking companies and registrants).
[xi.] The evidence thus establishes that Respondent has, deliberately or with willful disregard, included Complainant’s JOHN HANCOCK® trademark in its domain name to divert customers from Complainant’s website and refer visitors to websites of competitors via “pay-per-click” links. Moreover, Respondent’s illicit use of the domain name in this fashion creates the erroneous impression of endorsement by, or affiliation with, Complainant.
[xii.] For all the foregoing reasons, the domain name should be considered as having been registered and used in bad faith, in violation of the Policy.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(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.
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 Complainant to prove the following three elements to obtain an order cancelling or transferring a domain name:
(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.”).
Complainant John Hancock Life Insurance Company (U.S.A.) is an insurance and financial services company providing insurance, investments, and other financial services under the JOHN HANCOCK trademark. Complainant argues it is one of the oldest and best-known businesses in the U.S. and around the world. While the Panel need not make a finding on this point, there is no doubt Complainant’s mark is well known and Complainant has been in existence for more than 100 years. Complainant is the owner of trademark registrations with the United States Patent & Trademark Office (“USPTO”) for the JOHN HANCOCK mark (e.g., Reg. No. 1,287,236, registered July 24, 1984). Complainant also owns trademarks with India’s Office of the Controller-General of Patents, Designs and Trademarks for the JOHN HANCOCK mark (Reg. No. 714,421, registered March 30, 2007). Although Respondent appears to reside in India, Complainant does not need to register its mark in Respondent’s country to show its rights. See Renaissance Hotel Holdings, Inc. v. Renaissance Cochin, FA 932344 (Nat. Arb. Forum Apr. 23, 2007) (finding that it does not matter whether the complainant has registered its trademark in the country in which the respondent resides, only that it can establish rights in some jurisdiction). Complainant’s registration of the JOHN HANCOCK mark with the USPTO and India’s Office of the Controller-General of Patents, Designs and Trademarks sufficiently establishes its rights in the mark under Policy ¶4(a)(i). See Am. Int’l Group, Inc. v. Morris, FA 569033 (Nat. Arb. Forum Dec. 6, 2005) (“Complainant has established rights in the AIG mark through registration of the mark with several trademark authorities throughout the world, including the United States Patent and Trademark Office (‘USPTO’)”).
Complainant claims Respondent’s <johnhancockinvestments.com> domain name is confusingly similar to Complainant’s registered trademark JOHN HANCOCK, despite the addition of the suffix “investments.” The word “investments” actually increases confusion because Complainant’s JOHN HANCOCK mark is often used in connection with investment services. Respondent’s addition of a descriptive term does not adequately distinguish Respondent’s domain name from Complainant’s mark under Policy ¶4(a)(i). See Novell, Inc. v. Taeho Kim, FA 167964 (Nat. Arb. Forum Oct. 24, 2003) (finding the <novellsolutions.com> domain name confusingly similar to the NOVELL mark despite the addition of the descriptive term “solutions” because even though “the word ‘solutions’ is descriptive when used for software, Respondent has used this word paired with Complainant's trademark NOVELL”). Respondent adds the generic top-level domain (“gTLD”) “.com” to the disputed domain name. A gTLD or ccTLD must be ignored when comparing a disputed domain name to a mark. See Starwood Capital Grp. Global LLC v. Resort Realty, FA 1043061 (Nat. Arb. Forum Sept. 6, 2007) (“Furthermore, the addition of the generic top-level domain ‘.com’ does nothing to eliminate the confusing similarity, as a top-level domain is a requirement for all domain names.”). Respondent’s <johnhancockinvestments.com> domain name is confusingly similar to Complainant’s registered trademark JOHN HANCOCK under Policy ¶4(a)(i).
The Panel finds Policy ¶4(a)(i) satisfied.
Complainant must first make a prima facie case Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶4(a)(ii). Then the burden shifts to Respondent to show it has 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.”).
Complainant claims Respondent is not commonly known by the domain <johnhancockinvestments.com>. The WHOIS information identifies “RAKSHITA MERCANTILE PRIVATE LIMITED” as the registrant of the disputed domain name. Respondent is neither an agent nor a licensee of Complainant, and has never been an agent or a licensee of Complainant. Respondent fails to provide any evidence showing it is known by the disputed domain name. Therefore, the Panel finds Respondent is not commonly known by the disputed domain name under Policy ¶4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name).
Respondent’s disputed domain name resolves to a “pay-per-click” website, where Respondent presumably has been using the domain name for commercial gain since 2006 by redirecting Internet users to commercial websites for profit. Respondent’s website provides competing links titled, “401K Plan,” “John Hancock,” “Convert 401K to Roth Ira,” and others. In H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008), the panel held respondent’s disputed domain names which resolved to a website featuring a series of advertising links to various third-parties, many of whom offered products and services in direct competition with those offered under complainant’s mark, respondent was not using the disputed domain names for a bona fide offering of goods or services or a legitimate noncommercial or fair use. This Panel agrees and finds Respondent’s use of the disputed domain name to provide competing links is not a Policy ¶4(c)(i) bona fide offering of goods and services or a Policy ¶4(c)(iii) noncommercial or fair use.
The Panel finds Policy ¶4(a)(ii) satisfied.
Complainant claims Respondent has, deliberately or with willful disregard, included Complainant’s JOHN HANCOCK trademark in its domain to divert customers from Complainant’s website and refer visitors to websites of competitors via “pay-per-click” links. Complainant believes customers are likely to be confused as to whether the website located at <johnhancockinvestments.com> is related to or affiliated with Complainant. Respondent’s website provides competing links titled, “401K Plan,” “John Hancock,” “Convert 401K to Roth Ira,” and others. Respondent is disrupting Complainant’s business by providing competing links, evidencing bad faith use and registration under Policy ¶4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is sufficient evidence of bad faith registration and use pursuant to Policy ¶4(b)(iii).”).
Complainant claims there will be confusion regarding the source, sponsorship, affiliation, or endorsement of Respondent’s website with Complainant’s JOHN HANCOCK mark and services. Complainant argues customers are likely to be confused as to whether the website located at <johnhancockinvestments.com> is related to or affiliated with Complainant. The Panel agrees and finds Respondent registered the disputed domain name to attract users for its own commercial gain, showing bad faith use and registration under Policy ¶4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Complainant claims Respondent was aware of Complainant and the nature of Complainant’s business when Respondent registered the <johnhancockinvestments.com> domain in October of 2006. It seems obvious Respondent had actual knowledge of Complainant’s mark in light of the disputed domain name and its related web site. The Panel finds Respondent registered and uses the disputed domain name in bad faith under Policy ¶4(a)(iii). See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."); see also Yahoo! Inc. v. Butler, FA 744444 (Nat. Arb. Forum Aug. 17, 2006) (finding bad faith where the respondent was "well-aware of the complainant's YAHOO! mark at the time of registration).
The Panel finds Policy ¶4(a)(iii) satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes relief shall be GRANTED.
Accordingly, it is Ordered the <johnhancockinvestments.com> domain name be TRANSFERRED from Respondent to Complainant.
Houston Putnam Lowry, Chartered Arbitrator, Panelist
Dated: Tuesday, May 7, 2013
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