Metropolitan Life Insurance Company v. John VanTubergen
Claim Number: FA1107001399735
Complainant is Metropolitan Life Insurance Company (“Complainant”), represented by Gary Saposnik of Melbourne IT Digital Brand Services, California, USA. Respondent is John VanTubergen (“Respondent”), Michigan, USA.
REGISTRAR AND DISPUTED DOMAIN NAMES
The domain names at issue are <metlifemtg.com> and <metlifemtgs.com>, registered with Godaddy.Com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
R. Glen Ayers served as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on July 20, 2011; the National Arbitration Forum received payment on July 20, 2011.
On July 21, 2011, Godaddy.Com, Inc. confirmed by e-mail to the National Arbitration Forum that the <metlifemtg.com> and <metlifemtgs.com> domain names are registered with Godaddy.Com, Inc. and that Respondent is the current registrant of the names. Godaddy.Com, Inc. has verified that Respondent is bound by the Godaddy.Com, 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 July 28, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of August 17, 2011 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@metlifemtg.com and postmaster@metlifemtgs.com. Also on July 28, 2011, the Written Notice of the Complaint, notifying Respondent of the email 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.
A timely Response was received and determined to be complete on August 17, 2011.
An Additional Submission was received from Complainant which was timely and has been considered.
On August 19, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed R. Glen Ayers as Panelist.
Complainant requests that the domain names be transferred from Respondent to Complainant.
A. Complainant
Complainant filed a Complaint and Amended Complaint. References in this section are to the Amended Complaint.
Complainant asserts that it holds a famous trademark, METLIFE, in use since at least 1968, which was registered in 1989. It holds registered marks for a number of Metropolitan Life related business. It has also registered the domain name <www.metlife.com>.
It has successfully defended its marks in courts and in domain name proceedings under the ICANN Policies and Rules. Complainant emphasizes the size of the company and its affiliates and the famous nature of its marks. Complainant asserts that the trademark registration covers use of the mark for “’residential and commercial mortgage lending services.’”
It alleges that persons like Respondent are on constructive notice of its marks, given the famous nature of the marks and the number of cases and domain name decisions involving its marks. It further notes that addition of the “mtg” and “mtgs” to the domain name is not significant.
The domain names registered by Respondent, <metlifemtg.com> and <metlifemtgs.com> registered in May of 2009 and December of 2010, are alleged to be confusingly similar to the METLIFE mark and related marks.
Complainant asserts that Respondent has no rights in the name. It is not known by the name; it should have been aware of the marks because of the factors set out including the age of the company and the use of the names and related marks for over 100 years. Respondent has no permission to use the names; and, says Complainant, the domain names were chosen to intentionally attract Internet users.
The Complainant lists a number of factors reflecting “bad faith.” Complainant asserts that the domain names resolve either to a website providing insurance and other services or providing home mortgage products. The second web site is also registered to Respondent.
Respondent also registered <metlifemtgs.com> after receiving a cease and desist letter concerning the first-registered web site.
B. Respondent
In response, Respondent filed a “pro se” answer. He purchased the domain name <metlifemtg.com> at some time in the past and received no complaints until he received the cease and desist letter. He argues that Complainant could and should have registered all the variations to protect itself and that “they want what I own and want to strong arm me … because I am a small fry.”
He argues that abbreviations are not the same as names.
He states that he has never contacted Complainant and has never tried to sell the names.
His “Bottom line” is that he is honest and “bought” the domain names “the right way….”
C. Additional Submissions
Complainant filed an “Additional Submission” which has been considered. The additional submission repeats arguments concerning the history and nature of the METLIFE mark, and notes that the trademark registration covers use of the mark for “’residential and commercial mortgage lending services.’”
Again, Complainant stresses the constructive notice given by its registration and by the very famous and distinctive nature of its marks. Complainant emphasizes that its mark is used in connection with mortgage services.
Complainant also reviews its contention that Respondent has no rights in the name and that Respondent has acted in bad faith.
There is no doubt that Complainant owns the mark METLIFE and related marks. METLIFE is also clearly confusingly similar to the domain names owned by Respondent. Complainant has more than satisfied its burden of proof in regard to this element of the Policies and Rules.
Also, except for an attempt to argue the difference between the mark and the domain names, which consists of adding “mtg” and “mtgs,” Respondent has done nothing to rebut these assertions.
Complainant has also clearly demonstrated that Respondent has no rights in the name. Respondent’s pleading does nothing to rebut this allegation.
As to bad faith, Respondent asserts that it has never attempted to sell the domain names and that he originally purchased one, <metlifemtg.com> from another party. He asserts honesty in fact. However, Complainant has certainly shown that Respondent has attempted to use these domain names to divert Internet users and generate click-thru revenue using these domain names.
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.
Complainant has secured rights in the METLIFE mark through its numerous trademark registrations with the United States Patent and Trademark Office (“USPTO”). Complainant’s rights in a mark are established through registration with a federal trademark authority. See SDC Media, Inc. v. SCMedia, FA 960250 (Nat. Arb. Forum June 7, 2007) (holding that “[t]his trademark registration [with the USPTO] establishes Complainant’s rights in the mark pursuant to Policy ¶ 4(a)(i).”); see also Automotive Racing Products, Inc. v. Linecom, FA 836787 (Nat. Arb. Forum Dec. 21, 2006) (finding that the Complainant’s federal trademark registration established its rights in the mark under Policy ¶ 4(a)(i)). In the instant proceeding, Complainant provided evidence of its USPTO trademark registrations for the METLIFE mark (e.g., Reg. No. 1,541,862 registered May 30, 1989). Complainant has established its rights in the METLIFE mark, pursuant to Policy ¶ 4(a)(i), through its USPTO trademark registrations.
Respondent’s <metlifemtg.com> and <metlifemtgs.com> domain names are confusingly similar to Complainant’s METLIFE mark. The disputed domain names utilize the entire METLIFE mark and only change it by adding the abbreviations “mtg” and “mtgs” for “mortgage(s)” and by adding the generic top-level domain (“gTLD”) “.com.” The addition of an abbreviation or term to the end of Complainant’s mark does not sufficiently distinguish the disputed domain names. See Kelson Physician Partners, Inc. v. Mason, CPR003 (CPR 2000) (finding that <kelsonmd.com> is identical or confusingly similar to the complainant’s federally registered service mark, KELSON); see also Victoria’s Secret v. Plum Promotions, FA 96503 (Nat. Arb. Forum Feb. 27, 2001) (“The mere addition of the generic term “tv” does not reduce the likelihood of confusion under Policy 4(a)(i).”). The affixation of a gTLD is a necessary part of any domain name and therefore, does not factor into a Policy ¶ 4(a)(i) analysis. See Trip Network Inc. v. Alviera, FA 914943 (Nat. Arb. Forum Mar. 27, 2007) (concluding that the affixation of a gTLD to a domain name is irrelevant to a Policy ¶ 4(a)(i) analysis). In light of these precedents, the Panel concludes that Respondent’s disputed domain names are confusingly similar to the METLIFE mark according to Policy ¶ 4(a)(i).
Complainant has made a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii); the burden to rebut shifted to Respondent to show that 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.”).
Complainant showed that Respondent is not commonly known by the <metlifemtg.com> and <metlifemtgs.com> domain names. The WHOIS information provides that the domain name registrant is “John VanTubergen,” a name not at all similar to the disputed domain names. Complainant showed and Respondent did not deny that there is no relationship between Complainant and Respondent that would give rise to any license, permission, or authorization by which Respondent could use the METLIFE mark in the disputed domain names. The evidence shows that Respondent is not commonly known by the disputed domain names under Policy ¶ 4(c)(ii). See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s <metlifemtg.com> disputed domain name resolves to a website at <preferredlendingcenter.com>, which is the site of the Preferred Lending Center, a company providing home and commercial financing and mortgage services directly competing with Complainant’s business. Respondent is the registrant of <preferredlendingcenter.com> as well. Respondent’s use of the <metlifemtg.com> domain name to redirect Internet users to Respondent’s own competing website is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Bank of Am. Corp. v. Nw. Free Cmty. Access, FA 180704 (Nat. Arb. Forum Sept. 30, 2003) (“Respondent’s demonstrated intent to divert Internet users seeking Complainant’s website to a website of Respondent and for Respondent’s benefit is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii).”); see also DLJ Long Term Inv. Corp. v. BargainDomainNames.com, FA 104580 (Nat. Arb. Forum Apr. 9, 2002) (“Respondent is not using the disputed domain name in connection with a bona fide offering of goods and services because Respondent is using the domain name to divert Internet users to <visual.com>, where services that compete with Complainant are advertised.”).
As for the <metlifemtgs.com> domain name, it resolves to a website providing third-party links to websites in direct competition with Complainant’s insurance business. Complainant suggests and it is reasonable to assume that Respondent receives click-through fees from these third-party links; Respondent did not contest this allegation. Respondent’s holding of a directory website which contains third-party links to Complainant’s competitors is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Expedia, Inc. v. Compaid, FA 520654 (Nat. Arb. Forum Aug. 30, 2005) (finding that the respondent’s use of the <expediate.com> domain name to redirect Internet users to a website featuring links to travel services that competed with the complainant was not a bona fide offering of goods or services pursuant to Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use pursuant to Policy ¶ 4(c)(iii)); see also Tesco Pers. Fin. Ltd. v. Domain Mgmt. Servs., FA 877982 (Nat. Arb. Forum Feb. 13, 2007) (finding that the respondent was not using the <tesco-finance.com> domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use by maintaining a web page with misleading links to the complainant’s competitors in the financial services industry).
Complainant presented a prima facie case showing that Respondent registered and is using the disputed domain names in order to interrupt Complainant’s business. Internet users intending to purchase Complainant’s mortgage or insurance services may find either of Respondent’s websites and purchase similar services from Preferred Lending Center or one of the competing third-party links. Respondent’s registration and use of the disputed domain names does disrupt Complainant’s business and constitutes bad faith pursuant to 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 evidence of bad faith registration and use pursuant to Policy ¶ 4(b)(iii).”); see also David Hall Rare Coins v. Tex. Int’l Prop. Assocs., FA 915206 (Nat. Arb. Forum Apr. 9, 2007) (finding that the respondent registered and used the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iii) because respondent used the disputed domain name to advertise goods and services of complainant’s competitors, thereby disrupting the complainant’s business).
Complainant claims that Respondent’s use of the confusingly similar disputed domain names and insurance-related content on the resolving websites creates a likelihood of confusion as to Complainant’s affiliation with the disputed domain names. The Panel may conclude that Respondent’s attempt to commercially gain from user confusion by collecting click-through fees from third-party links on <metlifemtgs.com> and by redirecting Internet traffic to its own Preferred Lending Center website through the <metlifemtg.com> domain name constitutes bad faith use and registration under Policy ¶ 4(b)(iv). See Allianz of Am. Corp. v. Bond, FA 680624 (Nat. Arb. Forum June 2, 2006) (finding bad faith registration and use under Policy ¶ 4(b)(iv) where the respondent was diverting Internet users searching for the complainant to its own website and likely profiting); see also DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“the Panel finds the respondent is appropriating the complainant’s mark in a confusingly similar domain name for commercial gain, which is evidence of bad faith registration and use pursuant to Policy ¶4(b)(iv).”).
Respondent also had actual notice of Complainant’s rights in the METLIFE mark since it registered the <metlifemtgs.com> domain name after receiving a cease and desist letter and corresponding with Complainant regarding the transfer of the <metlifemtg.com> domain name. Respondent certainly had constructive notice Complainant’s rights when it registered the disputed domain names since the METLIFE mark is a well-known, registered trademark. Other panels have determined that constructive notice may be insufficient for a finding of bad faith, but this Panel disagrees, at least where the mark in question is as old and famous and well-known as the METLIFE trademark. The Panel concludes that Respondent registered the <metlifemtgs.com > domain name in bad faith under Policy ¶ 4(a)(iii). As to the second registration of <metlifemtgs.com>, Respondent received actual notice of Complainant’s rights because of the cease and desist letter. See 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); see also Ty Inc. v. Parvin, D2000-0688 (WIPO Nov. 9, 2000) (finding that the respondent’s registration and use of an identical and/or confusingly similar domain name was in bad faith where the complainant’s BEANIE BABIES mark was famous and the respondent should have been aware of it).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <metlifemtg.com> and <metlifemtgs.com> domain names be TRANSFERRED from Respondent to Complainant.
R. Glen Ayers, Panelist
Dated: September 3, 2011
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