DECISION

 

The Manufacturers Life Insurance Company v. ShenZhaoYong

Claim Number: FA2403002088819

 

PARTIES

Complainant is The Manufacturers Life Insurance Company ("Complainant"), represented by Jonathan Matkowsky of Microsoft Corporation – Microsoft Security Research, US. Respondent is ShenZhaoYong ("Respondent"), China.

 

REGISTRAR AND DISPUTED DOMAIN NAME

The domain name at issue is <manulifecqs.com>, registered with 22net, Inc..

 

PANEL

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.

 

Debrett G. Lyons as Panelist.

 

PROCEDURAL HISTORY

Complainant submitted a Complaint to Forum electronically on March 18, 2024; Forum received payment on March 21, 2024.

 

On March 19, 2024, 22net, Inc. confirmed by e-mail to Forum that the <manulifecqs.com> domain name is registered with 22net, Inc. and that Respondent is the current registrant of the name. 22net, Inc. has verified that Respondent is bound by the 22net, Inc. 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 25, 2024, Forum served the Complaint and all Annexes, including a Chinese and English Written Notice of the Complaint, setting a deadline of April 15, 2024 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@manulifecqs.com. Also on March 25, 2024, the Chinese and English 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, Forum transmitted to the parties a Notification of Respondent Default in Chinese and English.

 

On April 16, 2024, pursuant to Complainant's request to have the dispute decided by a single-member Panel, Forum appointed Debrett G. Lyons as Panelist.

 

Having reviewed the communications records, the Administrative Panel (the "Panel") finds that 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, Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.

 

RELIEF SOUGHT

Complainant requests that the domain name be transferred from Respondent to Complainant.

 

PRELIMINARY ISSUE: COMPLAINANT ADDITIONAL SUBMISSION

On April 3, 2024, Complainant made a supplemental filing in this matter and has relied upon paragraph 10 of the Rules in requesting that the Panel use its discretion to consider the added submissions.

 

Having considered the matters raised, the Panel accepts the supplemental filing since it finds that the added information is directly relevant to the language of the proceedings, the issue of legitimate interests, and the questions of registration and use in bad faith.

 

The substance of the supplemental filing is considered contextually in what follows below.

 

PRELIMINARY ISSUE: LANGUAGE OF THE PROCEEDING

According to the Registrar, the registration agreement for the domain name is written in Chinese.  Rule 11(a) provides that the language of the proceedings is the language of the registration agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the case.  

 

Complainant filed its Complaint in English and argues that the proceedings should be conducted in English. It is established practice to take UDRP Rules 10(b) and (c) into consideration for the purpose of determining the language of the proceeding to ensure fairness and justice to both parties.  Factors which previous panels have seen as important include evidence showing that the respondent can understand the language of the complaint, the language of the domain name, the content on any web pages resolving from the domain name, prior correspondence between the parties, and potential unfairness or unwarranted delay in ordering translation of the pleadings and the Decision.

 

Complainant's submission is that:

"Respondent appears to be conversant and comfortable with the English language; Complainant on the other hand, would have to hire a translator to proceed in the corresponding Chinese dialect, which may cause undue delay and burden. Complainant submits in the spirit of fairness and justice to both Parties, and so that the proceeding may be conducted in a timely and cost-effective manner, that the Panel judiciously consider the Parties' respective ability to understand and use the proposed language, time, and costs in deciding whether to grant Complainant's request that the Panel adapt English as the language of the proceeding."

 

Complainant goes on to explain that:

"CQS is one of the most established names in alternative credit. … On November 15, 2023, Manulife had signed an agreement to acquire CQS. Upon completion of the transaction, Manulife will acquire the CQS credit platform and the CQS brand, which it intends to align (within the contours of applicable law) with the Manulife brand as a co-branded logo." … "On that same day, Respondent created the Domain, suggesting Respondent was monitoring the industry news, which is predominantly in English and understood the significance of the event to act promptly. The announcement was widely circulated in English, the standard language for international business communications. As a major event with global interest, the announcement was covered extensively in English by international news outlets.  The registrant's awareness of this event suggests access to and understanding of English-language media." 

 

Furthermore, in its supplemental filing, Complainant provides evidence that on March 27, 2024, Respondent contacted Complainant by email attempting to extract $500 from Complainant to terminate proceedings. The insinuation was that Respondent had instructed a partner from an international law firm to defend the proceedings and, if required, file an appeal. Based on this alone, Complainant has petitioned the Panel to to accept the Complaint submitted in English and adopt English as the language of the proceeding because Respondent is conversant in the English language.

 

The Panel accepts in this case that procedural fairness favours Complainant. There has been no formal Response. There has been no communication from Respondent objecting that it could not read or understand the Complaint. On the contrary, its approach to Complainant shows ample facility in English and a willingness to negotiate in English. As discussed hereunder, Respondent appears to have no rights or legitimate interests and the reasonable inference is that the domain name was registered opportunistically upon publication of the prospective acquisition and future co-branding.

 

The Panel determines that the proceedings should continue in English. See, for example, Fair Isaac Corporation v. AKPOVO Chidiac, FA 2034648 (Forum Apr. 12, 2023) finding panel has discretion to conduct proceedings in English contrary to registration agreement given evidence that respondent understands the language; Maxim Integrated Products, Inc. v. wang xing xing, FA 2035248 (Forum Apr. 11, 2023) ("Respondent … advertise its products and services in English, and the resolving website asks in English for potential customers to contact Respondent directly...."); United Parcel Service of America, Inc. v. MEHKMET ISYAN AYIRKAN, FA 2035819 (Forum Apr. 11, 2023) ("Factors … seen as particularly compelling are: WHOIS information which establishes Respondent in a country which would demonstrate familiarity with the English language, filing of a trademark registration with an entity which shows an understanding of the English language, and any evidence (or lack thereof) exhibiting Respondent's understanding of the … language included in the Registration Agreement."); POC Sweden AB d/b/a POC North America v. Ma Fanghua, FA 2034043 (Forum Apr. 4, 2023) ("The Domain Name contains an English word, resolves to a website ("Respondent's Website") which is entirely in English and contains material copied from Complainant's English-language website.").

 

PARTIES' CONTENTIONS

A. Complainant

Complainant asserts trademark rights in MANULIFE.  Complainant holds a national registration for that trademark.  Complainant submits that the disputed domain name is confusingly similar to its trademark.  

 

Complainant alleges that Respondent has no rights or legitimate interests in the disputed domain name. Further, Complainant alleges that Respondent registered the disputed domain name in bad faith.  In particular, Complainant alleges that Respondent registered the domain name opportunistically the same day as the public announcement of a corporate acquisition by Complainant and its future co-branding plans.

 

B. Respondent

Respondent failed to submit a Response in this proceeding.

 

FINDINGS

The factual findings pertinent to the decision in this case are that:

1.       Complainant is a large Canadian life insurance company;

2.       Complainant is the owner of, inter alia, United States Patent & Trademark Office ("USPTO") Reg. No. 1,790,892, for MANULIFE, registered on August 31, 1993;

3.       Complainant is a wholly owned subsidiary of Manulife Financial Corporation ("Manulife").

4.       CQS is a business that provides alternative credit;

5.       on November 15, 2023, Manulife signed an agreement to acquire CQS and the CQS brand;

6.       announcement of the agreement and of the intention to co-brand services was made public on November 15, 2023; and

7.       the disputed domain name was registered on November 15, 2023, and has not been used.

 

DISCUSSION

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(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules.  

 

Identical and/or Confusingly Similar

Paragraph 4(a)(i) of the Policy requires a two-fold enquiry—a threshold investigation into whether a complainant has rights in a trademark, followed by an assessment of whether the disputed domain name is identical or confusingly similar to that trademark.

 

It is well established by decisions under this Policy that a trademark registered with a national authority is evidence of trademark rights (see, for example, Mothers Against Drunk Driving v. phix, FA 174052 (Forum Sept. 25, 2003)).  Complainant therefore has rights in MANULIFE since it provides proof of registration of that trademark with the USPTO, a national trademark authority.

 

For the purposes of comparison of the disputed domain name with the trademark, Complainant's submission is that:

 

"[t]he Domain contains the Mark in its entirety and is recognizable as such in the Domain. … The presence of a third-party mark not joined in a proceeding would not generally by itself prevent a finding of confusing similarity, but specifically due to the pending acquisition between CQS and Manulife, a finding of confusing similarity is even more compelling to the extent that the appended term directly relates to Complainant's business.

 

The submission has several aspects which should be unpacked. First is the argument that the trademark is recognizable in the disputed domain name. The Panel follows that accepted position that, generally, the gTLD, ".com" can be disregarded in making the assessment (see, for example, Am. Int'l Group, Inc. v. Domain Admin. Ltd., FA 1106369 (Forum Dec. 31, 2007)). The comparison reduces to that of the trademark, MANULIFE, with manulifecqs. The Panel also follows the general proposition that where a relevant trademark is recognizable within a disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) does not as a rule prevent a finding of confusing similarity under paragraph 4(a)(i) of the Policy (see, for example, Bloomberg Finance L.P. v. Nexperian Holding Limited, FA 1782013 (Forum June 4, 2018) ("Bloomberg"). 

 

Within the Bloomberg parameters, the element "CQS" can be treated as being meaningless, since the preponderance of UDRP case opinion is that the paragraph 4(a)(i) comparison should ignore the reputation of a mark. The submission that "a finding of confusing similarity is even more compelling to the extent that the appended term [CQS] directly relates to Complainant's business" is thus based on the false premises of a future event not yet complete, and on the assumption that CGS is well-known and should be treated as such.

 

Otherwise, the Complaint attempts to amplify the Bloomberg argument by its submission that the addition of a third party's trademark to the Complainant's trademark should generally be disregarded (citing, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition § 4.13).

 

The Panel need not consider the argument because it accepts, as a matter of first principles, that Complainant's trademark is indeed recognizable within the disputed domain name and that the added matter, "cgs", should be treated as meaningless and of insufficient substance to detract from recognition of the trademark in a serious way.  The Panel finds that the domain name is confusingly similar to the trademark.

 

The Panel this finds that Complainant has satisfied the requirements of paragraph 4(a)(i) of the Policy.

 

Rights or Legitimate Interests

Paragraph 4(c) of the Policy states that any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate rights or legitimate interests to a domain name for purposes of paragraph 4(a)(ii) of the Policy:

 

(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.

 

Complainant need only make out a prima facie case that Respondent has no rights or legitimate interests in the disputed domain name, after which the onus shifts to Respondent to rebut that case by demonstrating those rights or interests (see, for example, Do The Hustle, LLC v. Tropic Web, D2000‑0624 (WIPO Aug. 21, 2000)).

 

The name of the domain name owner does not carry any suggestion that Respondent might be commonly known by the domain name. There is no evidence that Respondent has any trademark rights of its own.  In the evidence attaching to the supplemental filing there is a reference by Respondent to the trademark having "already been registered in China", but there is no evidence to support that claim.

 

Complainant states that there is no relationship between the parties and Respondent has not been authorized to use its trademark. There is nothing to contradict that claim.

 

Complainant's assertion is that the domain name was registered opportunistically, and the Panel unequivocally accepts that submission.

 

The Panel finds that a prima facie case has been made.  The onus shifts to Respondent and in the absence of a Response, the Panel finds that Respondent has not discharged that onus and so finds the Respondent has no rights or interests.

 

The Panel finds that Complainant has satisfied the second limb of the Policy.

 

Registration and Use in Bad Faith

Complainant must prove on the balance of probabilities both that the disputed domain name was registered in bad faith and used in bad faith.  

 

Further guidance on that requirement is found in paragraph 4(b) of the Policy, which sets out four circumstances, any one of which is taken to be evidence of the registration and use of a domain name in bad faith if established. 

 

The four specified circumstances are:

 

(i)                      circumstances indicating that the respondent has registered or 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 the respondent's documented out-of-pocket costs directly related to the domain name; or

 

(ii)                      the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or

 

(iii)                      the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

(iv)                      by using the domain name, respondent has intentionally attempted to attract, for commercial gain, internet users to respondent's website or other on-line 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 site or location.'

 

The Complaint argues principally for the Panel to find, as separate matters, registration in bad faith and use in bad faith. There being no use, the Complaint rightly relies on the principle of passive holding in bad faith.  

 

The Complaint states that "MANULIFE was a very well-known trademark prior to the Domain's registration date" since "Complainant … has been using the mark in its business since 1887", going on to state that the trademark is "recognized by Interbrand as one of the Best Canadian Brands, and repeatedly ranked at the top spot among Canadian insurers on the Forbes list of the World's Best Employers, for three consecutive years prior to the creation of the Domain, Manulife was named one of Canada's Best 50 Corporate Citizens."  Complainant's submission is that it is a leading financial services provider that has served customers for more than 155 years and there is very little chance that Respondent could have registered the disputed domain name without knowledge of Complainant's and its business.

 

The Panel draws the reasonable inference that the domain name was registered in bad faith. There is nothing to suggest that Respondent could have a legitimate expectation to use the trademark in good faith. The Panel treats the residual issue of use in bad faith in line with the leading case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003. The panelist there posed the question: "what circumstances of inaction (passive holding) other than those identified in paragraphs 4(b)(i), (ii) and (iii) can constitute a domain name being used in bad faith?", concluding that "the question can only be answered in respect of the particular facts of a specific case", whereafter he paid regard to circumstances showing that (i) the complainant's trademark was widely known, (ii) the respondent had provided no evidence of any actual or contemplated good faith use by it of the domain name, (iii) the respondent has taken active steps to conceal its identity and had provided false contact details, and (iv) it was not possible to conceive of any plausible use of the domain name by the respondent that would not be illegitimate in the sense of infringing complainant's rights.

 

Following that case, the Panel finds passive holding and "use" in bad faith and so finds that Complainant has satisfied the third and final element of the Policy.

 

Were there any doubt about this reasoning, the Panel also finds that Respondent's conduct falls under paragraph 4(b)(i) above. As noted above, the supplemental filing provides evidence that Respondent, in effect, offered to sell the domain name to Complainant for much more than the registration costs.

 

The Panel finds that Complainant has satisfied the third and final element of the Policy.

 

DECISION

Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.

 

Accordingly, it is Ordered that the <manulifecqs.com> domain name be TRANSFERRED from Respondent to Complainant.

 

 

 

Debrett G Lyons, Panelist

Dated: April 18, 2024