ADMINISTRATIVE PANEL DECISION
Under the ICANN Uniform Domain Name Dispute Resolution
1. Parties and Contested Domain Name
The Complainant is The Manufacturers Life Insurance Company of 200 Bloor Street East, Toronto, Ontario, Canada M4W 1E5
The Respondent is Daryl Bourke of 2041 Horizon Drive, Kelowna, British Columbia, Canada V1Z 3N49
The contested domain name is manulifefinancial.com which is stated to be registered with Network Solutions, Inc.
2. Procedural History
The Clerk of eResolution has advised that the Complainant filed a complaint submission under the ICANN Uniform Domain Name Dispute Resolution Policy, (the "ICANN Policy") in both electronic format and hardcopy format on February 28, 2001. Further, on March 5, 2001 the Clerk of eResolution provided notice of the complaint to the Respondent in conformance with the applicable rules of procedure. The Respondent did not submit a response to the complaint.
3. Factual Background
The Complainant is a leading Canadian-based financial services company operating in 15 countries and territories worldwide. The Complainant is involved in a diverse range of financial activities, including the provision of financial protection products and wealth management services. The Complainant has for several decades provided a wide range of financial and insurance services in the United States and Canada and owns a family of internationally registered trademarks for MANULIFE FINANCIAL and MANULIFE.
The Complainant's registered trademarks in Canada include Registration numbers 389,919, 391,245 and 385,241 for the marks MANULIFE FINANCIAL, which has been used in Canada since March 1990, and MANULIFE FINANCIAL Design, which has been used in Canada since April 1991. The Complainant's registered trademarks in the United States include Registration numbers 1,688,092, 1,689,271, 1,790,892 and 1,795,445 for the marks MANULIFE FINANCIAL and MANULIFE FINANCIAL Design which have been used in the United States since March 1990.
The Complainant's registered trademarks in Canada include Registration numbers 188,969, 322,951 and 358,240 for the marks MANULIFE, MANULIFE & Design and MANULIFE Design, which have been used in Canada since at least as early as December 1971, December 1986 and April 1991 repsectively.
The Respondent has registered the domain name manulifefinancial.com. The Respondent does not carry on any business activities related to the domain name and the Respondent does not operate a web site under the domain name. The Respondent has no reputation in association the MANULIFE or MANULIFE FINANCIAL trademarks and is not associated with the Complainant or the business activities carried on by the Complainant.
A series of communications occurred between the Complainant, the Respondent and legal counsel for the Complainant. By letter dated September 29, 1999 the Respondent wrote to the Complainant stating that he is the current owner of the manulifefinancial.com web site address, indicated that he "would like to give [the Complainant] the first opportunity to purchase that address" and solicited an expression of interest in that proposition from the Complainant.
On November 10, 1999 the Complainant's in-house legal counsel wrote to the Respondent setting out the Complainant's existing trademark rights and requested that the Respondent transfer the domain name to the Complainant, or delete the domain name registration.
On November 22, 1999 the Respondent wrote to the Complainant stating that any interference with the Respondent's property would result in "swift repercussions" and that "It would seem that the most obvious and simplest solution has escaped you. Also your vailed [stet] threat with a dead line does not impress me" The Respondent further stated in his letter, that:
(i) "I own www.manulifefinancial.com, there is no web page and you do not have my permission to use its designation on the Internet";
(ii) "Any attempt to use this designation on the Internet or restrict it in any manor [stet] my title to it will result in immediate legal action against for [stet] company";
(iii) "You can change the name of your company to something like Clarica if you like"; and
(iv) "Any action or lack of action you pick, I feel will cost Manulife".
On December 10, 1999, the Complainant's external legal counsel on intellectual property matters wrote to the Respondent reiterating the Complainant's trademark rights and concerns, and requested that the Respondent transfer the domain name to the Complainant or delete the domain name registration.
On December 16, 1999, the Respondent wrote a final letter to the Complainant's external legal counsel in which he stated: "As I have obtained Manulifefinancial.com in a lawful and legal manner I have no intention of giving the domain name to [the Complainant]." The Respondent further stated that: " Manulifefinancial.com as of this date has not appeared and will never appear on the Internet. The [contested] domain name is no longer available for anyone's use." The Respondent concludes by stating that he "does not wish to hear" from the Complainant or its solicitors "at any future date" and that "Any legal action initiated by [the Complainant] will only result in a public relations nightmare"
On February 28, 2001 the Complainant commenced proceedings against the Respondent under the ICANN Policy.
3. Parties' Contentions
The Complainant contends that the Respondent lives in Canada, the jurisdiction in which the Complainant is based, and that the Respondent's correspondence demonstrates that at all material times he was clearly aware of the existence of the Complainant and its trademarks.
The Complainant alleges that the contested domain name registered by the Respondent is identical or confusingly similar with registered trademarks of the Complainant. The Complainant also alleges that the Respondent has no rights or legitimate interest in respect of the contested domain name.
The Complainant additionally contends that the conduct of the Respondent indicates that the domain name has been registered and used in bad faith. The Respondent's correspondence demonstrates that he has registered the domain name for the purpose of preventing the Complainant from reflecting its trademarks in corresponding domain names, subject to purchasing the domain name from the Respondent at a price in excess of his documented out-of-pocket expenses directly related to the domain name. The Respondent is not using the contested domain name for any active business or any legitimate purpose and such passive inaction combined with evidence of an intention to prevent the Complainant from obtaining or using the domain name by any method other than buying it, constitutes bad faith use.
The remedy requested by the Complainant is the transfer of the contested domain name to the Complainant.
The Respondent did not file a response to the submission of the Complainant.
4. Discussion and Findings
Paragraph 15(a) of the Rules under the ICANN Policy provides that the Panel shall:
"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 ICANN Policy, requires the Complainant to establish:
(i) That the domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) That the Respondent has no rights or legitimate interests in respect of the domain name; and
(ii) That the domain name has been registered and is being used in bad faith.
The domain name manulifefinancial.com contains exactly the same words in the same sequence as they appear in the MANULIFE FINANCIAL registered trademarks of the Complainant. Accordingly it is the finding of the Panel that the contested domain name is identical or confusingly similar to the trademarks of the Complainant.
With respect to the issue of any legitimate rights or interest of the Respondent in the contested domain name, Paragraph 4(c) of the ICANN Policy shows how a Respondent can demonstrate rights or an interest in a domain name. While the general onus of proof rests on a Complainant, the failure by a Respondent to demonstrate the application of paragraph 4(c) can assist the Panel in deciding whether on consideration of all the evidence a Complainant has discharged the onus of proof. The following circumstances in particular, but without limitation, if found by the Panel to be proved, demonstrate rights or legitimate interests in the domain name at issue.
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
The Complainant has presented evidence that there does not appear to be any active web site or online presence connected to the contested domain name, that the Respondent does not have any reputation associated with the domain name and that the correspondence of the Respondent indicates an intention to preclude any use of the domain name. The circumstances do not indicate that the Complainant has licensed or otherwise permitted the Respondent to use any of its trademarks or apply for the use of any domain name incorporating any of those trademarks. No evidence to the contrary was presented to the Panel by the Respondent.
Accordingly it is the finding of the Panel that the Respondent has no rights or legitimate interests in the contested domain name.
Paragraph 4(b) of the ICANN Policy provides that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site 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 your web site or location or of a product or service on your web site or location."
The correspondence and conduct of the Respondent supports the proposition that the purpose of registration of the contested domain name was to prevent the Complainant from reflecting its trademarks in a corresponding domain name. However, no evidence of a pattern of such conduct, such as a listing of additional third party domain name registrations by the Respondent, was provided.
The correspondence and conduct of the Respondent supports the proposition that the Respondent registered the contested domain name primarily for the purpose of selling or otherwise transferring the domain name registration to the Complainant, who is the owner of a corresponding trademark, for valuable consideration in excess of the threshhold established in the ICANN Policy for transfers in good faith.
The decision in Telestra Corporation Limited v Nuclear Marshmallows, WIPO Case No D2000-0003 established that "inaction" on the part of the Respondent with respect to the use of the contested domain name can constitute bad faith use. That principle has been followed by subsequent panels in ICANN Policy domain name disputes as referenced at paragraph 6.8 in Do the Hustle, LLC v Donald Wilson, WIPO Case No D2000-0627. In the present circumstances the correspondence and conduct of the Respondent, purporting to preclude any use of the contested domain name and actively soliciting an offer from the Complainant to purchase the domain name constitutes positive action supporting the proposition that in addition to registration in bad faith, the domain name has been used in bad faith within the meaning of the ICANN Policy.
The Respondent has failed to respond to the commencement of these proceedings and take the opportunity to establish any legitimate purpose for registration of the contested domain name, or any legitimate use of the contested domain name.
Accordingly it is the finding of the Panel that the Respondent has registered and used the contested domain name in bad faith.
For the foregoing reasons the Panel concludes that, with respect to the contested domain name manulifefinancial.com:
(a) The contested domain name registered by the Respondent is identical or confusingly similar to the trademarks of the Complainant;
(b) The Respondent has no rights or legitimate interests in respect of the contested domain name; and
(c) The contested domain name registered by the Respondent has been registered, and used, in bad faith.
Accordingly, pursuant to paragraph 4 (i) of the ICANN Policy, the Panel requires that the registration of the domain name manulifefinancial.com be transferred to the Complainant.
Dated at Vancouver, Canada, April 29, 2001
(s) David Marcel Robinson