Milliman, Inc. v Caleb Milne

WIPO Case No. D2024-3054

ARBITRATION
AND
MEDIATION CENTER

ADMINISTRATIVE PANEL DECISION

Milliman, Inc. v. Caleb Milne

Case No. D2024-3054

1. The Parties

The Complainant is Milliman, Inc., United States of America (“U.S.”), represented by Adams and Reese LLP,

U.S.

The Respondent is Caleb Milne, U.S.

2. The Domain Name and Registrar

The disputed domain name <careers-milliman.com> (the “Disputed Domain Name”) is registered with

NameSilo, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 26, 2024. On
July 26, 2024, the Center transmitted by email to the Registrar a request for registrar verification in
connection with the Disputed Domain Name. On July 26, 2024 , the Registrar transmitted by email to the
Center its verification response disclosing registrant and contact information for the Disputed Domain Name
which differed from the named Respondent (REDACTED FOR PRIVACY, See PrivacyGuardian.org) and
contact information in the Complaint. The Center sent an email communication to the Complainant on July
30, 2024, providing the registrant and contact information disclosed by the Registrar, and inviting the
Complainant to submit an amendment to the Complaint. The Complainant filed an amended Complaint on

August 2, 2024.

The Center verified that the Complaint together with the amended Complaint satisfied the formal
requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for
Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for

Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the
Complaint, and the proceedings commenced on August 5, 2024. In accordance with the Rules, paragraph 5,
the due date for Response was August 25, 2024. The Respondent did not submit any response.
Accordingly, the Center notified the Respondent’s default on August 27, 2024.

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The Center appointed Purvi Patel Albers as the sole panelist in this matter on September 11, 2024. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the

Rules, paragraph 7.

4. Factual Background

The Complainant is a U.S. corporation organized in the state of Washington with headquarters in Seattle,
Washington. The Complainant is an actuarial and consulting firm operating in the areas of employee
benefits, investment, property and casualty, healthcare, life and financial services, and insurance services.

The Complainant has been active in these fields since 1947.

The Complaint includes evidence of ownership of U.S. trademark registrations for MILLIMAN, including:

- U.S. Registration No. 2,551,240 for MILLIMAN, (registered March 19, 2002), for use in connection

with actuarial services, pension and retirement fund administration services, and benefits outsourcing
services;

- U.S. Registration No. 2,694,177 for MILLIMAN, (registered March 4, 2003), for use in connection with, inter alia, computer software for planning, analysis, computation, and reporting;

- U.S. Registration No. 2,535,009 for MILLIMAN, (registered January 29, 2002), for use in connection with business consulting services; and

- U.S. Registration No. 3,387,917 for MILLIMAN, (registered February 26, 2008), for use in connection with, inter alia, business consulting services.

The Complainant also owns the domain names <milliman.com> and <millimanbenefits.com>. The

<milliman.com> domain name is used by the Complainant for its employees’ email addresses.

The Disputed Domain Name was created on July 7, 2024. The Complaint includes evidence that on July 25, address to send a fake job offer on behalf of the Complainant.

2024, the Disputed Domain Name resolved to a pay-per-click parking page consisting of links to websites
purportedly offering services akin to those offered by the Complainant. Additionally, without the

At the time of writing this decision, the Disputed Domain Name is inactive.

5. Parties’ Contentions

A. Complainant

The Complainant contends that it has satisfied each of the elements required under the Policy for a transfer of the Disputed Domain Name.

Notably, the Complainant contends that it has rights in the MILLIMAN mark as a result of the registrations cited above. The Complainant further asserts that the Disputed Domain Name is confusingly similar to the MILLIMAN mark because the Disputed Domain Name wholly incorporates the mark and the addition of the generic word “careers” and a hyphen does not dispel the confusion.

The Complainant also contends that the Respondent has no rights or legitimate interests in the Disputed Domain Name. The Complainant asserts that it is the exclusive owner of the MILLIMAN mark, and the Respondent is not associated with the Complainant. The Complainant further asserts that the Respondent is not using the Disputed Domain Name in connection with a bona fide offering of goods or services or in a legitimate non-commercial or fair manner because the Respondent is using the Disputed Domain Name as a commercial parking page and to defraud potential job applicants.

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Finally, the Complainant contends that the Disputed Domain Name was registered and is being used in bad faith because, among other things, the Respondent used pay-per-clink links at the domain name to generate revenues, the Respondent offered fake job positions with the Complainant, and the Respondent has

demonstrated a pattern of conduct that evidences bad faith.

B. Respondent

The Respondent did not reply to the Complainant’s contentions.

6. Discussion and Findings

In accordance with paragraph 4(a) of the Policy, to succeed in this dispute, the Complainant must establish that:

i.         the Disputed Domain Name is identical or confusingly similar to a trademark in which the Complainant

has rights;

ii.         the Respondent has no rights or legitimate interests in respect of the Disputed Domain Name; and

iii.        the Disputed Domain Name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

It is well accepted that the first element functions primarily as a standing requirement. The standing (or threshold) test for confusing similarity involves a reasoned but relatively straightforward comparison between the Complainant’s trademark and the Disputed Domain Name. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, (“WIPO Overview 3.0”), section 1.7.

The Complainant has shown rights in respect of a trademark for purposes of the Policy through various trademark registrations. Thus, the Complainant has provided prima facie evidence of trademark rights. WIPO Overview 3.0, section 1.2.1.

The Panel also finds that the Disputed Domain Name is confusingly similar to the Complainant’s MILLIMAN mark. Where a domain name incorporates the entirety of a trademark, the domain name will normally be considered confusingly similar to that mark for purposes of UDRP standing. WIPO Overview 3.0, section 1.7. Here, the entirety of the MILLIMAN mark is reproduced within the Disputed Domain Name, with the addition of the term “careers” and a hyphen. Accordingly, the Panel finds that the mark is clearly recognizable within the Disputed Domain Name and the Disputed Domain Name is confusingly similar to the mark.

Although the addition of other terms, namely, “careers” followed by a hyphen, may bear on assessment of the second and third elements, the Panel finds the addition of such terms does not prevent a finding of confusing similarity between the Disputed Domain Name and the MILLIMAN mark. Where the relevant trademark is recognizable within the disputed domain name, the addition of other terms, whether descriptive or otherwise, will not prevent a finding of confusing similarity under the first element. WIPO Overview 3.0, section 1.8.

The Panel finds the first element of the Policy has been established.

B. Rights or Legitimate Interests

Paragraph 4(c) of the Policy provides a list of circumstances in which the Respondent may demonstrate rights or legitimate interests in a Disputed Domain Name.

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Although the overall burden of proof in UDRP proceedings is on the complainant, panels have recognized that proving a respondent lacks rights or legitimate interests in a domain name may result in the difficult task of “proving a negative”, requiring information that is often primarily within the knowledge or control of the respondent. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of production on this element shifts to the respondent to come forward with relevant evidence demonstrating rights or legitimate interests in the domain name (although the burden of proof always remains on the complainant). If the respondent fails to come forward with such relevant evidence, the complainant is deemed to have satisfied the second element. WIPO Overview 3.0, section 2.1.

Having reviewed the available record, the Panel finds that the Complainant has established a prima facie
case that the Respondent lacks rights or legitimate interests in the Disputed Domain Name. The Disputed
Domain Name was registered long after the Complainant received its registrations, and the Complainant has
not authorized the Respondent to use the Complainant’s mark or to register a domain name incorporating it.
There is no evidence showing that the Respondent is, or has been, known as “careers-milliman” or similar.

Furthermore, the Respondent has no legitimate interests in respect of the Disputed Domain Name. On July 25, 2024, the Disputed Domain Name hosted a pay-per-click scheme, consisting of links to websites purportedly offering services akin to those offered by the Complainant. Panels have found that the use of a domain name to host a parked page comprising pay-per-click links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users. WIPO Overview 3.0, section 2.9; See, e.g., Merck Sharp & Dohme Corp. v. Domain Administrator, PrivacyGuardian.org / George Ring, DN Capital Inc., WIPO Case No. D2017-0302.

Without the Complainant’s authorization, the Respondent has also used the domain name to send a fake job offer on behalf of the Complainant. Panels have held that the use of a domain name for deceptive activity, such as claimed impersonation as part of an employment scam, can never confer rights or legitimate interests on a respondent. WIPO Overview 3.0, section 2.13.1; See, e.g., ManTech International Corporation v. Kayley Crosby, WIPO Case No. D2023-5101.

The Respondent has not rebutted the Complainant’s prima facie showing and has not come forward with any relevant evidence demonstrating rights or legitimate interests in the Disputed Domain Name.

The Panel finds the second element of the Policy has been established.

C. Registered and Used in Bad Faith

The Panel notes that, for the purposes of paragraph 4(a)(iii) of the Policy, paragraph 4(b) of the Policy establishes non-exhaustive circumstances, that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith.

In particular, paragraph 4(b)(iv) of the Policy provides that the intentional use of a domain name to attract users to a website for commercial gain, by creating a likelihood of confusion with the complainant’s mark, establishes bad faith in the registration and use of the domain name. In the present case, the Panel notes

that the Respondent used the Disputed Domain Name for its own commercial gain by creating a likelihood of
confusion with the Complainant’s MILLIMAN mark. The Respondent attempted to profit off the

Complainant’s reputation through pay-per-click links on a confusingly similar site.

In addition to the circumstances in paragraph 4(b) of the Policy, the Panel may consider other relevant
details in assessing the bad faith element. WIPO Overview 3.0, section 3.2.1. Panels have held that the use
of a domain name for deceptive activity, such as impersonation email scams, constitutes bad faith.
WIPO Overview 3.0, section 3.4; See, e.g., Minerva S.A. v. Whoisguard Protected, Whoisguard, Inc., /
GREYHAT SERVICES, WIPO Case No. D2016-0385. Here, without the Complainant’s consent, the
Respondent created an email address using the Disputed Domain Name and sent a job offer for a position at

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the Complainant’s company. The Panel finds that the Respondent’s registration and use of the Disputed

Domain Name constitutes bad faith under the Policy.

The Panel finds that the Complainant has established the third element of the Policy.

7. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Disputed Domain Name <careers-milliman.com> be transferred to the Complainant.

/Purvi Patel Albers/
Purvi Patel Albers
Sole Panelist
Date: September 25, 2024